United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88776853
Mark: VIVO
|
|
Correspondence Address: 1540 WEST WARM SPRINGS ROAD SUITE 100
|
|
Applicant: VIVO MOBILE COMMUNICATION CO., LTD.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 08, 2021
This application was approved for publication on 02/08/2021. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
Trademark Act Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4371671. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied for mark is VIVIO for the following goods:
Class 9:
Downloadable computer application software, namely, software for playing music, software for playing games, software for enabling online shopping, software for accessing a travel guide, software for enabling communication, software for editing a photograph and software for image processing and transmission; Tablet computers; Smart glasses; Smart watches; Electric navigational instruments; Global positioning system (GPS) apparatus; Smartphones; Mobile phones; Cell phone covers; Cell phone cases; Protective films adapted for mobile phone screens; Wearable smart phones; Stands adapted for mobile phones; Cabinets for loudspeakers; Wireless speakers; Headphones; Wireless earphones; Earphones for cellular telephones; Wireless headsets for smart phones; Selfie sticks for use with smartphones; USB cables; USB cables for cellphones; Power adapters; Batteries, electric; Battery chargers; Wireless chargers; Battery chargers for mobile phones; Virtual reality glasses; Virtual reality headsets; Artificial intelligent speakers in the nature of wireless audio speakers; touch screens for mobile phones; mobile power banks in the nature of rechargeable batteries; Smartwatch bands; Chipsets for use with wireless communication apparatuses, consumer electronic devices, smart phones, and wearable mobile computers; Integrated circuits, namely, system basis chips and systems on a chip (SOC); Multiprocessor chips
The registered mark is V·I·V·O and design for the following goods:
Class 9:
Ethernet cables; Specialty electrical cables; Desktop monitor stands
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). As such, the wording in the registered mark is dominant as it is what consumers will use to call for the goods.
Here, the applied for mark VIVO and V·I·V·O are similar in sound, appearance, and meaning and therefore create a similar commercial impression as they are comprised of the same wording.
As such, the marks are confusingly similar.
Relatedness of the Goods
Amendment to Identification of Goods and/or Service Required
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may replace such wording with the following, if appropriate:
Class 9: |
Issue: |
Suggestion: |
|
Entry with third party registration requires revision, all other entries are acceptable. |
|
Downloadable computer application software, namely, software for playing music, software for playing games, software for enabling online shopping, software for accessing a travel guide, software for enabling communication, software for editing a photograph and software for image processing and transmission |
|
Downloadable computer application software, namely, software for playing music, software for playing games, software for enabling online shopping, software for accessing a travel guide, software for enabling communication, software for editing a photograph and software for image processing and transmission |
Tablet computers |
|
Tablet computers |
Smart glasses |
|
Smart glasses |
Smart watches |
|
Smart watches |
Electric navigational instruments |
|
Electric navigational instruments |
Global positioning system (GPS) apparatus |
|
Global positioning system (GPS) apparatus |
Smartphones |
|
Smartphones |
Mobile phones |
|
Mobile phones |
Cell phone covers |
|
Cell phone covers |
Cell phone cases |
|
Cell phone cases |
Protective films adapted for mobile phone screens |
|
Protective films adapted for mobile phone screens |
Wearable smart phones |
|
Wearable smart phones |
Stands adapted for mobile phones |
|
Stands adapted for mobile phones |
Cabinets for loudspeakers |
|
Cabinets for loudspeakers |
Wireless speakers |
|
Wireless speakers |
Headphones |
|
Headphones |
Wireless earphones |
|
Wireless earphones |
Earphones for cellular telephones |
|
Earphones for cellular telephones |
Wireless headsets for smart phones |
|
Wireless headsets for smart phones |
Selfie sticks for use with smartphones |
|
Selfie sticks for use with smartphones |
USB cables |
|
USB cables |
USB cables for cellphones |
|
USB cables for cellphones |
Power adapters |
|
Power adapters |
Batteries, electric |
|
Batteries, electric |
Battery chargers |
|
Battery chargers |
Wireless chargers |
|
Wireless chargers |
Battery chargers for mobile phones |
|
Battery chargers for mobile phones |
Virtual reality glasses |
|
Virtual reality glasses |
Virtual reality headsets |
|
Virtual reality headsets |
Artificial intelligent speakers in the nature of wireless audio speakers |
|
Artificial intelligent speakers in the nature of wireless audio speakers |
touch screens for mobile phones |
|
touch screens for mobile phones |
mobile power banks in the nature of rechargeable batteries |
Delete third party registration |
rechargeable batteries |
Smartwatch bands |
|
Smartwatch bands |
Chipsets for use with wireless communication apparatuses, consumer electronic devices, smart phones, and wearable mobile computers |
|
Chipsets for use with wireless communication apparatuses, consumer electronic devices, smart phones, and wearable mobile computers |
Integrated circuits, namely, system basis chips and systems on a chip (SOC) |
|
Integrated circuits, namely, system basis chips and systems on a chip (SOC) |
Multiprocessor chips |
|
Multiprocessor chips |
Applicant may substitute the following wording, if accurate:
Class 9:
Downloadable computer application software, namely, software for playing music, software for playing games, software for enabling online shopping, software for accessing a travel guide, software for enabling communication, software for editing a photograph and software for image processing and transmission; Tablet computers; Smart glasses; Smart watches; Electric navigational instruments; Global positioning system (GPS) apparatus; Smartphones; Mobile phones; Cell phone covers; Cell phone cases; Protective films adapted for mobile phone screens; Wearable smart phones; Stands adapted for mobile phones; Cabinets for loudspeakers; Wireless speakers; Headphones; Wireless earphones; Earphones for cellular telephones; Wireless headsets for smart phones; Selfie sticks for use with smartphones; USB cables; USB cables for cellphones; Power adapters; Batteries, electric; Battery chargers; Wireless chargers; Battery chargers for mobile phones; Virtual reality glasses; Virtual reality headsets; Artificial intelligent speakers in the nature of wireless audio speakers; touch screens for mobile phones; rechargeable batteries; Smartwatch bands; Chipsets for use with wireless communication apparatuses, consumer electronic devices, smart phones, and wearable mobile computers; Integrated circuits, namely, system basis chips and systems on a chip (SOC); Multiprocessor chips
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04
Response Guidelines
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Grace Duffin/
Grace Duffin, Esq.
Trademark Examining Attorney
Law Office 120
571-270-7069
Grace.Duffin@uspto.gov
RESPONSE GUIDANCE